EP 3 083 002 B1 relates to a filter medium, a filter element and a filter arrangement, especially to an interior air filter and an interior air filter assembly for cleaning air entering the interior of a motor vehicle.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board decided that claim 1 as granted lacked N over D3=WO 2008/066022 and its translation. The AR either lacked N or IS over D3 or had a problem of clarity.
All AR filed in appeal, but AR6 were carry-over requests.
As the opposition was rejected, the AR were not subject to a decision by the OD.
The patent was thus revoked.
The present case is interesting as it deals with the problem of repeating in appeal submissions made in first instance by the opponent.
The AR in question is AR4, which the board considered lacking N over D3. The feature at stake reads “wherein the second filter layer is arranged on the downstream side”.
The proprietor’s point of view
The proprietor argued that the opponent did not raise an objection of lack of N in the appeal proceedings against AR4, but merely referred to the arguments relating to Art 84 brought forward in the opposition procedure.
The opponent’s point of view
In the last paragraph on page 12 of the opponent’s submission, the opponent argued why the feature at stake, the flow in the filter medium itself, cannot have a limiting effect. A flow direction can only be specified for a filter arrangement and not for a filter medium as such.
Therefore, according to the opponent, this feature cannot lead to a different assessment of patentability.
The board’s decision
In the opponent’s submission in response to the proprietor’s reply to the appeal, the opponent indeed merely referred to his the submission on Art 84 against AR4 filed in opposition.
For the board, in said last paragraph on page 12 of the opponent’s submission in opposition, the opponent argued in sufficient detail why this feature, cannot have a limiting effect.
Furthermore, the opponent’s submission in first instance regarding the lack of novelty of AR4 was not the subject of the contested decision, which meant that the opponent was unable to address this issue in its appeal.
For the board, the reference to its submission in the first instance was specific, clearly defined and unambiguously attributable, which allowed it to be examined without substantial restriction.
What matters is that the opponent held this feature as being unclear and hence not limiting. Lack of N was thus the direct consequence.
Comments
Novelty vs. clarity
This decision is interesting as it reiterates the fact that an unclear feature cannot render the subject-matter of a claim novel over the prior art, cf. T 571/05, Reasons 3, T 144/12, Reasons 3, last § or T 872/09, Catchword 1, last §.
Carry over of submissions of first instance into appeal
In order to be taken into account in appeal, a reference to a submission in first instance ought to be specific, clearly defined and unambiguously attributable, which allows it to be examined without substantial restriction.
The present decision is to be welcomed, as in case of carry over requests not dealt with by an OD, it is difficult for an opponent to say much more than he had said in first instance as the OD did not deal with those. The same actually applies to the proprietor.
If carry over requests are properly substantiated and maintained in opposition, and the objections against those carry over requests are as well properly substantiated by the opponent in opposition, the requests as well as the objections against those can be considered validly raised and maintained.
They might be considered as amendments under Art 12(4) RPBA, as no decision was taken on those by the OD, but their transfer into the appeal procedure should not lead to their non-admissibility.
If the board does not feel like dealing with them, as no decision was taken on those by the OD, it should then refer the case to the OD for further prosecution, and not dismiss requests and objections for mere formal reasons.
There is also nothing which should withhold a board to deal with them, as all the arguments pro and contra are on the table.
It should also not be necessary to copy/past the arguments raised in first instance, and a mere referral to the submissions in first instance should be sufficient.
On the procedure
D3=WO 2008/066022 bears the classification units A61L9/01, A61L9/16 and B01D39/14.
EP 3 083 002 B1 bears the classification unit B01D 39/16. According the ISR established by the EPO, the search was carried out in B01D and in A61L. The ISR mentioned one document of category X, one of category X,Y, one of category Y and one of category X,P.
It is thus surprising that D3 was not found during the IS carried out by the EPO.
Comments
2 replies on “T 0870/24-Reference in appeal to submissions in first instance-Novelty vs. unclear features”
A welcome decision. You observe that “ It should also not be necessary to copy/past the arguments raised in first instance, and a mere referral to the submissions in first instance should be sufficient.” I agree with your view. However, I am not brave enough in practice and I always repeat or at least explicitly reiterate every argument from first instance. It is a waste of time and dilutes the submissions, leading to less focused appeal proceedings, but I feel I have no choice.
@ Anonymous,
I understand your precaution. It is a wise way to act, as one never knows how the board will react on those formal matters.
The problem is very simple: some boards are more interested by the form than the substance and try to come up with mere formal arguments to get red of a case, and hence improve their production/productivity statistic.
We should not forget that board members and chairpersons are only reappointed after a 5 year period, if they show a given “performance”, see R 12d(3). The performance criteria for re-appointment have never been published, but it is clear that under “performance”, the quantitative aspect is predominant.
According to Art 1(2) RPBA, at the beginning of the calendar year, each board has to define the number of files which it will deal with during said year. As a former member of the boards explained, each member receives its production target at the beginning of the year. If the target is not